Peer Review Starts for Software Patent Applications

IEEE Spectrum talks to the founder to Peer-to-Patent Beth Noveck

Qualcomm v. Broadcom. Amazon v. IBM. Apple v. seemingly everyone. The number of high-profile patent lawsuits in this country has reached a staggering level. Hoping to curtail the orgy of tech-industry litigation, the U.S. Patent and Trademark Office (USPTO) is experimenting with reforming the way patents are applied for and processed. Launching on 18 June 2007 was an Internet-based peer-review program whereby anyone (yes, even you) can help to evaluate a number of software patent applications voluntarily submitted for public evaluation. The one-year pilot Peer-to-Patent program is a collaboration between the USPTO and New York Law School’s Institute for Information Law and Policy, in New York City. The program’s Web site allows users to weigh in on patent applications by researching, evaluating, submitting, and discussing prior art, which is any existing information, such as articles in technology journals and other patents, relevant to the applicant’s claims.

Professor Beth Simone Noveck, founder of Peer-to-Patent, spoke with IEEE Spectrum reporter Suhas Sreedhar on 13 June 2007. (The interview has been edited for content and clarity. An audio supplement to this article will be available later this week.)

How did this project come about?

I am a professor of intellectual property law at New York Law School, and in discussing the patent examination system in class with my students, we remarked how, in this day and age of Wikipedia and blogs and online social networks, it seemed almost illogical to have a single patent examiner making a decision about a 20-year grant of monopoly rights with regard to a potentially important scientific innovation or something that could turn into a billion-dollar business. And so I proposed this idea and was not long thereafter contacted by IBM, which had also been doing some thinking and talking about the idea of putting out online collaborative tools to use to try to improve the patent system. Together we then did two things: we solicited other companies to get behind the idea of improving patent quality through public participation, and we went to the USPTO and suggested the idea of opening up the patent examination process for public participation. It’s really to the USPTO’s credit that they agreed to do it, and that they proposed the idea of a pilot in the software patent area.

Then we worked together—the USPTO, the private-sector corporations, and us, the university, along with a whole series of academic collaborators from different disciplines.

Does the USPTO have a history of using peer review?

I think, first of all, government agencies outside the intellectual property arena all practice some form of public participation. For instance, there’s what’s called notice-and-comment rule making, whereby an agency, such as the Environmental Protection Agency, will post a draft rule and invite the public to submit comments. There are also similar agencies that use peer review processes; they get scientists together to give feedback, in small groups, on agency research, for example. So there are other agencies that have a practice of consulting the public. This has not been done in the intellectual property arena for 200 years. The patent examination process has been a closed process without public participation except to the most limited extents.

It’s a new idea to open up the process and create a structured program on the Web that would allow people to provide input on the basis of expertise. Where public participation has been invited, it typically has come in two forms—either from paid lawyers and lobbyists who write extended briefs or legal documents that they submit to the agency, or in the form of postcards that are sent by interest groups to the agency in response to a potential rule. There’s never really been a way to take the more serious and thoughtful practices of peer review, where you’re giving really substantive input, and to do it in such a way that is open for everyone to participate in, whether that person is a graduate student or a professor, whether that person is in industry or in academia, and to open it up to a wider audience.

How do you get involved as an inventor?

If you’re an inventor, you submit an application to go through the public peer review process. The application is available online from the USPTO Web site and also from our Web site. The USPTO will review the request and respond to the inventor to let him or her know if the proposed invention is eligible for participation in the pilot program.

The advantages to participate if you’re an inventor are that the USPTO will allow your invention to get a better examination because the public is participating and to have the application reviewed faster. All applications that go through the pilot will be reviewed out of turn—in other words they’ll be taken first—and if you think about the fact that there’s now over a four-year backlog in this area of patents to get examined, being examined out of turn and having one’s invention reviewed in the course of less than a year, which is what the commitment is, I think is a tremendous incentive to participate. In addition, there is the value of getting public input that will help with refining the patent application and ensuring that the claims in the invention are truly new and an advance over what came before—which is what the law requires for that application to be valid.

We want to invite as many people as we can to participate as peer reviewers, regardless of their professional qualifications. Those with expertise in science or law, or simply with the enthusiasm or interest in the future of innovation and in patents, should get involved by visiting http://www.peertopatent.org.

The way the process works is that one selects a patent application from the list of those posted for public review. We’ll be posting 10 to 25 new applications each month, and what we’re really looking for the public to do is to find what’s known as prior art—in other words, publications that relate to the claims of this patent application. So what we’re looking for is help for the examiner in finding information, whether it’s another patent, whether it’s a product, whether it’s a piece of software code, whether it’s a magazine article or a book that may relate to this particular application, and therefore give the patent examiner guidance in assessing whether this invention in fact deserves the 20-year grant of monopoly rights that comes with the patent.

Reviewing is a free process. It’s hopefully an easy process to access. But I don’t want to mislead people: it’s not simple. It’s not as simple as posting an entry on Wikipedia. It’s technologically as easy, but we recognize that it’s hard work to read a patent application and to find information that’s relevant to it. But we think that it is well worth the time because this information will be directly relevant in deciding whether or not an application will succeed.

What you can also do is to help review the prior art that’s been submitted by other people—to help make the determination about whether the submitted prior art deserves to be forwarded to the patent examiner.

The reason we’ve gotten the USPTO to agree to do this pilot is that we have committed not to deluge them with too much information, too much irrelevant information. They’re already backlogged enough. What we’re doing is, as a community, we’re working together to select the 10 best pieces of information to forward to the patent office. The decision about what are the 10 best will be decided by the community itself, using the tools that are available online.

So each reviewer would basically have a vote, helping to determine which of the submitted prior art would be among the 10 best?

Yes. If you think about the fact that a patent examiner now has between 18 and 20 hours for the total review of a patent application, 18 to 20 hours to decide whether that Blackberry patent application gets granted or whether the peanut butter and jelly application deserves a 20-year grant of monopoly rights, 18 to 20 hours is not a lot of time to complete all the research and do the review. So what we’re trying to do is home in and winnow out, so that what gets sent to the patent office is the information that is the most relevant and useful to helping the examiner do his or her search and make that ultimate legal determination.

What do you expect the results of the program to be?

The first impact that we would hope to have is one we’ve already begun to have: to open up public discourse and public conversation around the question of patent quality and the future of the patent system in this country. So part of what we’re doing by creating an online system, by inviting the public to participate, is opening up a conversation between the legal community and the scientific community that is long overdue. Right now there is patent reform being considered in Congress. The Supreme Court has made several decisions, rulings this year, related to patents. But the question of the future of the patent system, though it affects scientists and engineers more than anyone else, is a conversation that’s largely been relegated to the legal community and the policy community. So what we want to do is open up the conversation, make the patent office more accountable to the scientific and the engineering community.

The second thing is we need to gather data and information. Part of the reason we’re doing this as a pilot is to gather hard data about the ways in which this potentially can improve the patent process. How does it change the way the examiners do their job? How does it affect the way they look for prior art when examining a patent application? What are the ways in which it changes the way inventors actually write their applications? Because the public is looking—and not just the small legal public, but a much wider public. Will it cause inventors to write better applications? And then what ultimately is the impact on the granted patent application? Will more claims be rejected? Will the strength of those claims, in fact, be more solid? And the quality of a patent that comes out of a patent application that’s been subjected to public review and public scrutiny—will that in fact be better?

Whether in the scope of a pilot or over a longer term, what I’m hoping is the patents that are granted will be better and stronger so that people with more frivolous applications that don’t deserve a patent may think twice about even applying for one. And hopefully the system as a result will become better, with higher quality applications.

I’d like to also think that the process of making these applications more widely and publicly available may—and this will take a long time to measure—ultimately lead to an increase in licensing revenues, because more information and news will get out about an invention and will potentially help to create a market around that invention. And, at the same time, the hope is that it will ultimately decrease the rates of litigation and lawsuits that stem from bad patent applications, because the application will have been vetted by and scrutinized by more eyeballs.

Software patents have been a huge subject of controversy. Should there be software patents?

There is, of course, a lot of controversy, and in Europe there has been tremendous success, in the last year, with limiting the scope of patentability for software-related inventions. Here we have a much broader view of patentable subject matter, and it will take a long time to change the scope of patentable subject matter. There are plenty of people who wish to see patents abolished altogether—which would take a constitutional amendment. The narrowing of the scope of patentable subject matter, whether it relates to software or to patents in the biomedical area is an important area for reform, and I feel strongly that reform is needed. There are those who are arguing for shorter patent terms, particularly in the high-tech arena and the biotech arena. There are many different proposals out there for reform. They are traditional, shall we say, legal reform proposals in that they need to go through Congress and need to go through the courts, and it will take many years, if it ever happens at all, to negotiate and will be subject to compromise and lobbying.

In the meantime, there is a lot that we can do. We’ve already started, with Peer-to-Patent, to try to make the process of examining patents better, to make the quality of the applications that come in better, to try to get inventors, because they will be subject to public scrutiny, to stop filing applications that don’t merit a patent, to draft those applications better so that they’re clearer and they teach or explain the invention better to the public. And we can do a better job of examining those applications, potentially rejecting more that don’t deserve a patent. It’s not just an issue of whether we should have software patents. What we’re trying to do is to improve the process by which the agency examines patent applications, and we’ve been able, really in the course of one year, to bring about what is a revolutionary change in the process of patent examination.

The pilot will subject 250 applications to public scrutiny. The UK patent office is going to launch a similar pilot, and they’re going into it with thousands of patent applications beginning by the end of this year. And we’re expecting more patent offices to follow suit. So if we can do something today to improve the quality of patents, it will help move forward the debate and the discussion about the scope of those patents and reform in the patent system.

So software patents were selected basically as a litmus test?

The reason we started with software patents is simply because they have the longest backlog of any area of patent examination, and also because the community, the people who are reading and listening to this, such as IEEE members, in fact has a strong spirit of volunteerism, has a strong spirit of engagement, and cares about innovation in this area.

We have to start somewhere, so we’re starting here. But we’ll be expanding over the course of the next year, and the UK pilot will not be limited to software patents.

Beyond this program, what other large areas of concern or areas that need reform do you see going forward?

There’s plenty we need to do to improve the functioning of our intellectual property system. But in the short term we will be working on Peer-to-Patent, to work for and work with issued patents, for the reexamination of patents that have already been granted. We would also like to expand the subject matter of patents that will face public scrutiny. Ultimately where this goes, I hope, is to a patent system that is not simply a pilot for public participation but an institutionalized mechanism for ongoing public participation across all areas of patenting. The hope is to apply some of the techniques that we learned about social networking, that we know from the private sector, from Web sites, and begin to apply them to the way government makes decisions.